This Article was written by Mr. LI Yunquan & Ms. WU Dan.
This valuable article is by Mr. LI Yunquan & Ms. WU Dan of the Wan Hui Da Law Firm, Beijing, China and is reprinted with kind permission. It deals with the difficult issue of proving bad faith registration where the domain name was registered before and not after the trademark owner/ Complainant's trademark was registered. It shows that where there has been advance publicity of the intention to establish the enterprise, there can still be bad faith in registering the domain name.
An exemplary case in which a right owner reclaims its legitimate domain name from a squatter through the alternative dispute resolution (ADR) mechanism.
The Asian Infrastructure Investment Bank (AIIB), headquartered in Beijing with a capital of USD$100 billion, is an inter-governmental multilateral financial institution proposed by the government of China for the purpose of financing infrastructure projects in the Asia region.
President Xi Jinping and Premier Li Keqiang announced the AIIB initiative during their respective visits to Southeast Asian countries in October 2013. It was agreed that the Chinese government takes the lead to set up the AIIB Multilateral Interim Secretariat (the Secretariat) for executing technical preparations and providing support and services to the members.
Since the Secretariat is not an independent legal person, a “Preparation and Management Company for the AIIB” was set up to maintain and protect any intellectual property rights on behalf of the AIIB.
In early 2015, the Secretariat found that the “AIIB.ORG” domain name was already registered by a squatter, a Chinese natural person (the Respondent).
On May 5, 2015, the AIIB Company filed a complaint with the Asian Domain Name Dispute Resolution Centre (ADNDRC) making the following claims:
AIIB enjoys a prior legal interest on the word AIIB , and using such identical domain name "AIIB.ORG" will definitely cause confusion around the world;
The respondent has no right to the disputed domain name;
The disputed domain name is registered for sale which demonstrates the Respondent’s bad faith.
Article 4 of the “Uniform Domain Name Dispute Resolution Policy” as approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 provides that when a domain name registration is challenged by a third party who alleges that:
(the) domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(the domain name registrant) has no rights or legitimate interests in respect of the domain name; and
(the) domain name has been registered and is being used in bad faith.
The submission to the administrative dispute resolution procedure is compulsory and the domain name registrant must submit to it. Meanwhile the plaintiff has the burden of proof of the above three points.
Both parties chose a member panellist, and the ADNDRC notified the parties on June 15 that the Panel should render a decision on or before June 29, 2015.
On June 29, 2015, the panel made the Decision in favour of the AIIB and ruled that the disputed domain name should be transferred to the complainant, confirming each of the three alleged points.
WAN HUI DA represented the complainant in the domain name dispute procedure.
Since President XI Jinping announced the AIIB initiative in October 2013, news coverage on the AIIB have been dominating the mainstream media. Through large-scale and extensive promotion and report, the Asian Infrastructure Investment Bank has been widely known by the public around the world. As the English abbreviation of Asian Infrastructure Investment Bank, the letters AIIB enjoys high reputation.
In this case, WAN HUI DA had to prove the high reputation of AIIB and that AIIB constitutes the trade/service mark used by the complainant in its business activities.
Meanwhile, WAN HUI DA highlighted the respondent’s bad faith in registering the domain name with various details, showing that the respondent did not have the intention of actually using the domain name, but only intended to sell it for a profit.